Supplementary European search
As a rule, a supplementary European search must be performed for each international application entering the European phase and a search fee must be paid. For an exception see points 5.9.007 ff. Like any European search report, the supplementary European search report is accompanied by an opinion under Rule 62 EPC, the European search opinion (ESOP), on whether the application and the invention to which it relates meet the requirements of the EPC. As a further service, the information sheet "Information on Search Strategy" is annexed to all supplementary European search reports as from 1 January 2018 (see point 3.2.012). The supplementary European search report together with the search opinion is known as the "extended (supplementary) European search report" (EESR).
No search opinion under Rule 62 EPC will be issued if the applicant:
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has filed the request for examination according to Rule 159(1)(f) EPC and
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has waived the right to be asked under Rule 70(2) EPC whether he wishes to proceed further with the application (see points 5.10.002 and 5.10.005)
before the supplementary European search report has been transmitted to him. Instead, a communication will be issued under Rule 71(1) or 71(3) EPC, respectively inviting the applicant to correct and/or amend the application or informing him of the text in which the EPO intends to grant the patent. If, in the latter case, the applicant submits reasoned amendments or corrections to the text intended for grant, the examining division will issue a further communication under Rule 71(3) EPC if it gives its consent to the amendments or corrections provided by the applicant. Upon fulfilment of certain conditions, applicants can waive the right to receive this further communication under Rule 71(3) EPC, which enables them to further expedite the European grant procedure.
The supplementary European search is performed on the basis of the last set of (amended) claims available to the EPO on expiry of the time limit set in the Rule 161 EPC/Rule 162 EPC communication (see points 5.4.020 ff). That set of claims is considered the final set at the time the search is performed (see point 5.4.011). Any claim for which a claim fee due has not been paid will not be searched (see points 5.11.007 ff).
If third-party observations were filed during the international phase and forwarded by the IB to the EPO as designated or elected Office, they will be considered in the supplementary European search report, provided they are substantiated and meet all formal requirements. Furthermore, provided they were not filed anonymously and the third party has explicitly so requested, the EPO will expedite the issuing of the first office action in the (European) examination phase.
If during the supplementary European search the EPO comes to the conclusion that the application contains more than one independent claim in the same category which does not fall under the exceptions listed under Rule 43(2) EPC, it may issue an invitation to indicate, within a time limit of two months, the basis on which the search is to be carried out (Rule 62a(1) EPC). Similarly, if it is impossible to carry out a meaningful search on the basis of all or some of the subject-matter claimed, the EPO will issue an invitation to file, within a time limit of two months, a statement indicating the subject-matter to be searched. Any declaration of no search, or a partial supplementary European search report issued subsequently due to failure to overcome the deficiency, takes the place of the European search report.
Source: http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_c5_9.html
Date retrieved: 17 May 2021
35 references found.
Click X to load a reference inside the current page, click on the title to open in a new page.EPC Articles
EPC Implementing Rules
XR.159 EPC The European Patent Office as a designated or elected Office – Requirements for entry into the European phase
EPO Guidelines - B Search
EPO Guidelines - C Procedureal Aspects of Substantive Examination
EPO Guidelines - E General Procedural Matters
EPO Guide for Applicants, part II Int.
EPO Guide for Applicants, part II Int. - C The EPO as ISA and SISA
XGA C5 Chapter 5 – Euro-PCT procedure before the EPO as a designated (PCT Chapter I) or elected (PCT Chapter II) Office
Offical Journal of the EPO
XOJ EPO 2017, A106 - Notice from the European Patent Office dated 5 December 2017 concerning the programme on search strategies
XOJ EPO 2017, A86 - Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC